SPTC, Inc. and Sotheby’s v. isaac daniel
Claim Number: FA2205001998223
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Lyndsey Waddington of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is isaac daniel (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebry.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2022; the Forum received payment on May 27, 2022.
On May 27, 2022, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <sothebry.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sothebry.com. Also on May 31, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On June 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: SPTC, Inc. and Sotheby’s.
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
The Panel has determined that both SPTC, Inc. and Sotheby’s are subsidiaries of the same parent company.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
A. Complainant
Complainant states that, together with its predecessors and affiliated companies and licensees, it has been engaged in the auction business since 1744, and currently offers global auction and real estate services. Complainant owns trademark rights for the marks SOTHEBY’S and SOTHEBYS through their registration in many jurisdictions, including in the United States in, respectively 1991 and 2001. The marks are famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its marks because it contains the marks in a misspelled form, merely adding the letter “r” between the letters “b” and “y”, omitting the final letter “s” and/or the apostrophe, and adding the generic top-level domain (“gTLD”) “.com”.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in any way. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Instead, Respondent uses the disputed domain to typosquat and to divert users to the website <sportsnovate.com> which purports to offer a marketplace for trading sports-related non-fungible tokens (NFTs).
According to Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar domain name to capitalize on the goodwill associated with the Complainant’s marks to attract users to its website where it offers unrelated products. Respondent’s domain name is an example of typosquatting. Respondent uses the disputed domain name to generate initial interest confusion. Respondent used a privacy service to conceal its identity in the domain name’s WHOIS information. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its email to the Forum, Respondent states, verbatim:
Dear [case coordinator],
I don’t know how to begin, thanking you for your emails or wondering why I received so many emails on the same day without due process.
Anyhow, I received some documents from you and still don’t know anything about who your Organization is. I noticed you are the lead case coordinator, but from who ICANN? Or You are the organization selected by ICANN to represent dispute? I’m not sure your role.
You sent a complaints, writing notices and some screenshot of my websites as your exhibits, which I have not giving permission for and that violated my site copy writing policy . Up till now, I don’t know who you represented and why are you contacting me except with bounch of attachments that does not make any sense yet to me.
For any complaint and dispute, there are process from ICANN and this process will enable my organization to hire the right counsel to represent us, because up till now; all what I have received from Sotheby and you following up are threats and I don’t appreciate any organization threatening me or my organization.
So, let’s assume we are starting from the beginning, if you are not representing ICANN. I want ICANN to send me a letter regarding a complaint received from Sothebry and specify what that complaint is all about - I think this is called a "due process."
Then, we will response to ICANN accordingly, because current steps is unethical and unprofessional, all these emails with attachments just demonstrated ICANN is running around on behalf of Sotheby instead of represent the worldwide web as a whole - including the domain my organization or me owns.
In a good faith to allow accurate and foresight due process, I have taken down my site for ICANN and my organization to conduct their due process properly and may I remind you, I have not asked sotheby.com to do the same.
Note, any days goes by without my site on, it's loosing an opportunity to start earning something for my organization which sotheby threats and vindictive has completely affect my sport's project operation. Therefore, the longer ICANN running around without due process, the more I’m loosing any revenue opportunity.
I will wait the normal due process.
Complainant owns the marks SOTHEBY’S and SOTHEBYS with rights dating back to, respectively, 1991 and 2001 and uses them to provide auction services around the world. The marks are famous.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is redirected to a web site that purports to offer products that are not related to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
In its email to the Forum, Respondent alleges that due process has not been followed because ICANN has not written directly to it. This allegation has no merit, because the ICANN’s website[i] provides full information on the UDRP, on providers such as the Forum, and on the procedures that must be followed. As noted above, the procedures have been followed, so due process has been respected.
The disputed domain name contains Complainant’s SOTHEBY’S and SOTHEBYS marks in a misspelled form, merely adding the letter “r” between the letters “b” and “y”, omitting the final letter “s” and/or the apostrophe, and adding the generic top-level domain (“gTLD”) “.com”. Under Policy ¶ 4(a)(i) misspelling a mark fails to sufficiently distinguish a domain name from a registered mark. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).;see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the SHIPCARSNOW mark because the domain name simply removes the letter “s”); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM , FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Here, the WHOIS information of record shows that the registrant is “isaac daniel.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is redirected to the website <sportsnovate.com> which purports to offer a marketplace for trading sports-related non-fungible tokens (NFTs). Use of a disputed domain name to redirect to third-party web pages does not qualify as any bona fide offering of goods or services, nor a legitimate non-commercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Further, Respondent’s use of a misspelling of Complainant’s mark in the disputed domain name constitutes typosquatting, which may not qualify as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s silence as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website promotes products unrelated to Complainant’s business. Such use of a domain name can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel therefore finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Respondent’s bad faith is further evident through its typosquatting behavior noted above. Typosquatting is the registration of domain names which target specific marks and only differ through minor typographical mistakes, and can be independent evidence of bad faith per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Accordingly, the Panel finds that Respondent’s typosquatting behavior indicates that it registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebry.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 29, 2022
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